It is not common for the Taiwanese Intellectual Property and Commercial Court (the ‘IPC Court’) to overturn a patent infringement opinion rendered by the technical examiner of the IPC Court in the first instance. It is also rare that the Supreme Court rescinds a judgment reached by the IPC Court in the second instance. Nevertheless, both scenarios occurred in a judgment that the Supreme Court rendered in April 2021.
First-instance trial
The patent at issue related to a large LED display installed on the body of a stage truck, in which a top rod and a bottom rod were fixed at the top and bottom ends of the main display and the side displays, respectively. The top rod and bottom rod were paired with corresponding sleeves through which pins were extended, thereby mounting the side displays to the main display to form a large screen.
At the first-instance trial in the Tainan District Court, the court entrusted a technical examiner of the IPC Court to investigate on the spot and provide an infringement analysis report. Although the bolts included in the accused design were referred to by the court as “pin bolts”, based on the report, the Tainan District Court held that the accused device literally infringed the patent at issue, since the bolts included in the accused device fell within the definition of the pins recited in the claims of the patent at issue.
The appeal
The IPC Court rescinded the judgment on appeal, finding that the accused device did not read on the claims of the patent at issue.
The judges of the IPC Court found, among others, that when performance was yet to begin or had ended, the pins locked between the two side displays and the main display, respectively, can be withdrawn so that the two side displays can be removed while achieving the function of easy assembly and disassembly.
On the other hand, the bolts included in the accused device were secured in the sleeves to serve the function of a stable connection that was not easy to loosen. Thus, the bolts included in the accused device cannot be construed as a variant of the pins in the patented device under the doctrine of equivalents.
Supreme Court appeal
Unsatisfied with the outcome, the patentee filed a further appeal, with the Supreme Court. However, the Supreme Court remanded the case for the following reasons.
While it was recited in the claims of the patent at issue that “the pins are extended through the sleeves, thereby mounting the side displays to the main display”, the pins included in the patent at issue also served the function of a connecting element. As bolts and pins seemingly serve the purpose of connection, the case was remanded to the second instance of the IPC Court to reconsider whether bolts are a variant of pins under the doctrine of equivalents.
Looking ahead
It is worth observing any further developments. Incidentally, in the second-instance judgment of the IPC Court, the judges also indicated that pins are used throughout the specification (including embodiments and drawings) with no reference to any other connecting elements. This merits the attention of practitioners when drafting a specification.
